1. Facts
1.1. Ava is a fashion design student.
1.2. Ava took a course called "Fashion for Safety."
1.2.1. During the course Ava worked on a team project to create an apparel item that appears normal but, with manipulation, converts into a camouflage design to hide from attackers. Ava's team designed a reversible sweater where one side had an abstract camouflage pattern using colors typically found in urban settings.
1.2.1.1. At the completion of the course, Ava's team posted the sweater’s design specifications to the Internet.
1.3. After the course was over, Ava continued thinking about camouflage clothing and how a person could “hide” in urban settings. This prompted Ava to develop a skirt that can convert into a fake vending machine, which she called the “Vending Machine Skirt.”
1.3.1. For the vending machine depicted on the skirt, Ava initially hand-drew an image of a vending machine. However, when she tested the skirt in public, she found that her drawings undermined the camouflage effect and drew unwanted attention.
1.3.2. Ava asked her friend Jerry, an amateur photographer, to photograph a specific Coca-Cola vending machine Ava found on a public street. To maximize its camouflage capacity, Ava gave Jerry very specific instructions about how and when to take the photo.
1.3.2.1. Ava created the final skirt version using the photo taken by Jerry since the public tests of the photo-based design indicated that the photo worked better as camouflage than her hand-drawn image.
2. Issue(s)
2.1. Can Ava receive patent, copyright and/or trademark protection for the Vending Machine Skirt?
2.2. Are there any copyright or trademark risks that Ava could face from commercializing the Vending Machine Skirt.
3. Rule of Law
3.1. Patent
3.1.1. A grant from the government that gives an inventor the exclusive right to make, use, or sell his or her design for 14 years. Applicant must demonstrate to the satisfaction of the U.S. Patent and Trademark Office that the invention, discovery, process, or design is novel, useful, and not obvious in light of current technology..
3.1.1.1. Infringement: Making use, or selling another’s patented design, product, or process without the patent owner’s permission, that firm commits the tort of patent infringement.
3.2. Copyright
3.2.1. An intangible property right granted by federal statute to the author or originator of a literary or artistic production of a specified type.
3.2.1.1. Infringement: Whenever the form or expression of an idea is copied, an infringement of copyright has occurred. The reproduction does not have to be exactly the same as the original, nor does it have to reproduce the original in its entirety. If a substantial part of the original is reproduced, the copyright has been infringed.
3.3. Trademark
3.3.1. Distinctive mark, motto, device, or implement that a manufacturer stamps, prints, or otherwise affixes to the goods it produces so that they can be identified on the market and their origins made known. In other words, a trademark is a source indicator.
3.3.1.1. Trademark Dilution
3.3.1.1.1. 1. The plaintiff owns a famous mark that is distinctive.
3.3.1.1.2. 2. The defendant has begun using a mark in commerce that allegedly is diluting the famous mark
3.3.1.1.3. 3. The similarity between the defendant’s mark and the famous mark gives rise to an association between the marks.
3.3.1.1.4. 4. The association is likely to impair the distinctiveness of the famous mark or harm its reputation.
3.3.1.2. Infringement: Whenever that trademark is copied to a substantial degree or used in its entirety by another, intentionally or unintentionally, the trademark has been infringed.
3.3.2. Registration: Trademarks may be registered with the state or with the federal government. To register for protection under federal trademark law, a person must file an application with the U.S. Patent and Trademark Office in Washington, D.C. Under current law, a mark can be registered (1) if it is currently in commerce or (2) if the applicant intends to put it into commerce within six months.
4. Analysis/Application
4.1. Patent
4.1.1. Can Ava receive patent protection for the Vending Machine Skirt?
4.1.1.1. The design was invented by Ava so it can be patented.
4.1.1.1.1. The design will satisfy the utility requirement. Additionally, a device that solely pretends to be something else can satisfy the utility requirement.
4.1.1.1.2. There is no evidence that the prior art contained an identical design. The sweater does not count against the novelty of the skirt claim because it’s not an identical invention.
4.1.2. Potential Statutory Bar Issue
4.1.2.1. Ava's use of the design in public normally would constitute a public disclosure that starts the 12 month statutory bar for filing in the US. (Public disclosure also would foreclose her international patent rights). The facts don’t specify how long it’s been since she initially wore the design in public.
4.1.2.1.1. Ava can argue that the public disclosures qualified as an experimental use, which would delay the accrual of the statutory bar. Ava has a pretty good argument that she needed to conduct the test in public. After all, the design’s whole point is to measure its ability to make someone hard-to-see in public spaces, so gauging the response of the public seems crucial.
4.2. Copyright
4.2.1. Can Ava receive copyright protection for the Vending Machine Skirt?
4.2.1.1. Skirt Design. Copyright law doesn’t protect the skirt design.
4.2.1.2. Skirt Image. The image on the skirt can be copyrightable. Ava first tried a hand-drawn image of a vending machine. That drawing would have qualified for copyright protection.
4.2.2. Are there any copyright risks Ava might face?
4.2.2.1. Photo: If Ava doesn’t own the photo of the vending machine, then at most she has a non- exclusive license, but we don’t know what are the terms of that license. As a result, it’s unclear if the license extends to commercializing the skirt.
4.2.2.1.1. If Ava exceeds the license scope, Jerry has a good prima facie case of copyright infringement:
4.2.2.1.2. Ava could not claim fair use of the image since she used it for commercial purposes.
4.3. Trademark
4.3.1. Can Ava receive trademark protection for the Vending Machine Skirt?
4.3.1.1. Name: The product’s current name, “Vending Machine Skirt,” is either descriptive or generic. Although the phrases “skirt” and “vending machine” are dictionary words, there isn’t a dictionary entry for “vending machine skirt.” As a result, I think the term is descriptive, not generic, so it would become eligible for trademark protection if it achieves secondary meaning.
4.3.1.1.1. Because Ava hasn’t commercialized the product yet, the name hasn’t achieved secondary meaning.
4.3.2. Are there any trademark risks Ava might face?
4.3.2.1. Trademark Infringement
4.3.2.1.1. The skirt prominently features several Coca-Cola brands.
4.3.2.1.2. The Coca-Cola name and logo are valid trademarks and Coca-Cola has priority over Ava. Courts will give Coca-Cola and its trademarks substantial protection.
4.3.2.2. Trademark Dilution
4.3.2.2.1. Ava’s use isn’t nominative, she isn’t creating a new definition to Coca-Cola or the logo; she’s using the marks exactly as they are found in the field
4.3.2.2.2. The tarnishment argument would not apply since consumers would most likely not think less of Coca-Cola because it’s used on the skirt.